DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/6/2026 has been entered.
Status of the Claims
Claims 1-8 remain pending and under current examination.
Response to Arguments and Withdrawn Rejections
Applicant’s arguments filed 8/6/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows.
The particular rejections of claims 2, 4, 6, and 8 under 35 U.S.C. 112(b) are withdrawn in view of Applicant’s amendments to the claims and corresponding persuasive arguments, which are detailed below. Additional rationale in the additional rejections under 35 U.S.C. 112(b) are noted to be withdrawn, however the rejection of claims 1 and 5 and subsequently 2-4 and 6-8 are maintained as detailed below with regard to the “hot weather” indefinite language.
Regarding the previously raised issues under 35 U.S.C. 112, Applicant presents claim amendments, a declaration filed under 3;7 C.F.R. 1.132, and arguments. The declaration is addressed below.
The declaration of Inventor Hsin-Yu Chen has been entered as filed 8/6/2026. The declarant states that in the hypothetical situation where there is no leaf surface, then there is nothing to do for a foliar spray step; in reply, this argument has been considered and is persuasive in view of the claim language clarifying that what is claimed applies to leaf surfaces when present, as amended. Applicant’s declaration also limits a reading of “hot weather condition” to paragraphs [0006] and [0007], however this argument is not persuasive in view of the indefinite claim language and the context of the specification as filed which does not define the term but rather discusses a context-specific example based on a single artisan’s potential understanding where said understanding may vary from one artisan and/or climate condition context including temperature, to another. While applicant may act as his own lexicographer, the written description must clearly define the claim term, and, in the instant case, the term is maintained indefinite because the specification does not clearly set forth a definition of the term “hot weather”. Naming an example does not constitute a definition.
Regarding the double patenting rejections, Applicant argues that the terminal disclaimer includes an attachment referencing additional copending applications. However, the terminal disclaimer itself clearly states only Application No. 18/389,780. Accordingly, double patenting rejections are maintained. The terminal disclaimer approved as noted 8/16/2026 in the file wrapper names only one reference application and not the cited multiplicity of reference applications and their corresponding nonstatutory double patenting rejections.
Maintained Rejections
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 5 recite “under hot weather condition” in line 2 of each claim. What constitutes a hot weather condition? What temperature and/or duration and/or humidity parameter would meet the claim. As written, what constitutes hot weather is subjective and variable from one artisan’s opinion to another, and an example generally described in the specification does not constitute a definition with definite endpoints or parameters, as further discussed above in “response to arguments”.
Appropriate clarification is required. Claims 1 and 5 recite problematic language as outlined above; claims 2-4 and 6-8 are rejected here since they depend from and therefore require all limitations of a rejected base claim.
Withdrawn Rejections and Response to Arguments – Double Patenting
Applicant’s terminal disclaimer filed 8/6/2026 has been approved as noted 8/16/26 in the file wrapper. The approved terminal disclaimer disclaims terms over claims in patent application no. 18/389,780.
Applicant’s remarks at page 4 state that “Applicant hereby provided the Terminal Disclaimers (PTO/AIA /25) for the co-pending applications”, however no terminal disclaimers over any application other than 18/389,780 appear presented or approved in the record. Accordingly, the following double patenting rejections are maintained at this time, and Applicant’s assertion that the claims are in condition for allowance is premature.
Maintained Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 provisionally are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (“B” in Table below) as listed in the table below in copending Application Numbers (“A” in Table below) as listed in the table below(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims pertain to a method of using a keratin hydrolysis peptide (KHP) solution by preparing a solution from mixing feathers and water in a sealed container, hydrolyzing said mixture according to specific time, pressure, and duration parameters, and using a mass spectrometer to confirm peptide content, and administering the solution to soil and/or to leaf surfaces of specified plants (“C” in Table below).
The instant claims differ from the copending claims in that (1) both claim sets have slightly different but still qualitatively similar numerical amounts with regard to mass of feathers, water content percentage, and hydrolysis temperature, pressure, and duration terms and (2) the instantly claimed method applies the solution to soil around tomato plants by infusion to the soil and/or an intended spray to plant leaf surfaces, whereas the copending claims are drawn to methods of applying the solution to the soil and/or leaves of the plants, specified particularly in the table below.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to adjust the hydrolysis conditions as part of routine optimization procedure as is customary in the art, with a reasonable expectation of success. One would have been motivated to do so to achieve the desired degree of hydrolysis reaction efficacy in a method of preparing a peptide solution from feathers in aqueous solution based on the copending claims’ suggestions of hydrolysis reactions for preparing keratin hydrolysis peptide solutions for enhancing crop yields and quality. Further, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute one for the other, the tomato crop instantly claimed for and/or in place of the crops of the copending claims as detailed in the Table above, with a reasonable expectation of success. One would have been motivated to apply the prepared solution to soil and/or leaves of alternate food or cash crops to achieve similar end results of enhanced production yield and quality of said food or cash crops.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
New Rejections, Same Rationale Applied where Copending Claims Previously Rejected are Now Issued
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of Patent No. 12527269 (also listed above as provisional rejection over copending application no. 18408245), for the reasons applied above.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims pertain to a method of using a keratin hydrolysis peptide (KHP) solution by preparing a solution from mixing feathers and water in a sealed container, hydrolyzing said mixture according to specific time, pressure, and duration parameters, and using a mass spectrometer to confirm peptide content, and administering the solution to soil and/or to leaf surfaces of specified plants (“C” in Table above, corresponding to content listed by provisional rejection of previously copending claims).
Conclusion
No claim is allowed at this time.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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